The Tolero Marketing Group differs from other internet resources in that an actual
attorney is available to handle your legal needs. Many internet sites do not employ attorneys
and only “help” others in Trademark Registration. In a business environment, disagreements
and disputes about rights and infringements may arise. Therefore, a law firm that can register
your mark as well as help you with administrative and other proceedings is an important
asset.
attorney is available to handle your legal needs. Many internet sites do not employ attorneys
and only “help” others in Trademark Registration. In a business environment, disagreements
and disputes about rights and infringements may arise. Therefore, a law firm that can register
your mark as well as help you with administrative and other proceedings is an important
asset.
| Trademarks |
| IMPORTANT: The material contained on this website and any attachments or references have been written or gathered for informational purposes only. Browsing the website is not considered to be legal advice and does not establish an attorney- client relationship. Legal counsel should be sought before acting on any information in this document. |
What is a trademark?
A trademark, or service mark, is a word or words and/or designs that can be used to identify that goods originate
from a particular source. The last thing a business owner wants is a competitor to trade, either intentionally or
unintentionally, on their good name. Our trademark system, if used properly and effectively, can help prevent this
from happening. The best way to help prevent this from happening is to apply to register your trademark or
service mark with the United States Patent and Trademark Office (USPTO).
A service mark is almost the same thing as a trademark, but used to identify a service instead of goods (e.g., a
travel agent that offers a service can register their business name as a service mark). An attorney can help you
determine whether you should apply for a trademark or a service mark.
What are the benefits of registration?
It is hard to imagine a well run business in this day and age that fails to register their trademarks. Benefits of
having a Federal trademark registration include:
1. Constructive notice nationwide of the trademark owner's claim. Thus, once your mark is registered, another
party cannot claim they had no knowledge of your use of your mark. This even applies to pending applications, for
example if an application is pending before the USPTO (but not yet granted), another party cannot adopt that mark
(or a confusingly similar one) in good faith.
2. Evidence of ownership of the trademark. It will be clear on the public record who has the rights to the
trademark registered.
3. Jurisdiction of federal courts may be invoked. If you need to sue someone for trading on an identical or
confusingly similar name, suing in Federal court carries numerous advantages over state court.
4. Registration can be used as a basis for obtaining registration in foreign countries. If you want to protect your
trademark in foreign countries then you can claim priority from your US application. If you are interested in
marketing your products internationally, this can give you a head start over other applicants.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Between two competing parties for the same trademark, who gets the registration?
Generally, the first to use the mark in commerce or the first to file an intent to use application with the USPTO has
the ultimate right to the Federal registration.
What do I need to register my mark?
If your mark is already being used, then you need to supply a specimen of how the mark is being used. A
specimen can be a real-world example of how the mark is actually used on the goods or in the offer of services.
Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a
service mark, specimens may be advertising such as magazine advertisements or brochures. For example, if you
wish to register "Heads and Tails" as the name of your current dog grooming business, then a picture of your
storefront with the name on it will suffice. If your mark is not yet being used, you can still register your mark by
way of an "intent to use" application. You have, at the latest, six months (this may be extendable) from the
issuance of the Notice of Allowance to file a Statement of Use with a Specimen showing how the goods are being
used.
How long does it take to get a registration?
This is difficult to predict as it depends on a number of factors, including how long the USPTO takes to process
the application, the basis for filing, and whether the application has any legal issues during its examination. It can
typically take from less than a year to several years.
Why would a registration be refused?
The United States Patent and Trademark Office will refuse to register a mark if it does not function as a trademark
or service mark. Not all words, names, symbols or devices function as trademarks. For example, matter which is
merely the generic name of the goods on which it is used cannot be registered. Additionally, Section 2 of the
Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for
refusing registration. The grounds for refusal under Section 2 may be summarized as:
1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions,
beliefs, or national symbols, or bring them into contempt or disrepute;
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or
of any State or municipality, or of any foreign nation;
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living
individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of
the United States during the life of his widow, if any, except by the written consent of the widow;
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use
of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of
applicant's goods or services;
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional. An attorney can help you determine whether your intended mark(s) will
meet the statutory requirements.
How long does a trademark registration last?
For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between
the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after
the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the
sixth or tenth year, with payment of an additional fee.
The registrant must also file a §9 renewal application within the year before the expiration date of a registration
currently 10 years), or within a grace period of six months after the expiration date, with payment of an additional
fee.
A trademark, or service mark, is a word or words and/or designs that can be used to identify that goods originate
from a particular source. The last thing a business owner wants is a competitor to trade, either intentionally or
unintentionally, on their good name. Our trademark system, if used properly and effectively, can help prevent this
from happening. The best way to help prevent this from happening is to apply to register your trademark or
service mark with the United States Patent and Trademark Office (USPTO).
A service mark is almost the same thing as a trademark, but used to identify a service instead of goods (e.g., a
travel agent that offers a service can register their business name as a service mark). An attorney can help you
determine whether you should apply for a trademark or a service mark.
What are the benefits of registration?
It is hard to imagine a well run business in this day and age that fails to register their trademarks. Benefits of
having a Federal trademark registration include:
1. Constructive notice nationwide of the trademark owner's claim. Thus, once your mark is registered, another
party cannot claim they had no knowledge of your use of your mark. This even applies to pending applications, for
example if an application is pending before the USPTO (but not yet granted), another party cannot adopt that mark
(or a confusingly similar one) in good faith.
2. Evidence of ownership of the trademark. It will be clear on the public record who has the rights to the
trademark registered.
3. Jurisdiction of federal courts may be invoked. If you need to sue someone for trading on an identical or
confusingly similar name, suing in Federal court carries numerous advantages over state court.
4. Registration can be used as a basis for obtaining registration in foreign countries. If you want to protect your
trademark in foreign countries then you can claim priority from your US application. If you are interested in
marketing your products internationally, this can give you a head start over other applicants.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Between two competing parties for the same trademark, who gets the registration?
Generally, the first to use the mark in commerce or the first to file an intent to use application with the USPTO has
the ultimate right to the Federal registration.
What do I need to register my mark?
If your mark is already being used, then you need to supply a specimen of how the mark is being used. A
specimen can be a real-world example of how the mark is actually used on the goods or in the offer of services.
Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a
service mark, specimens may be advertising such as magazine advertisements or brochures. For example, if you
wish to register "Heads and Tails" as the name of your current dog grooming business, then a picture of your
storefront with the name on it will suffice. If your mark is not yet being used, you can still register your mark by
way of an "intent to use" application. You have, at the latest, six months (this may be extendable) from the
issuance of the Notice of Allowance to file a Statement of Use with a Specimen showing how the goods are being
used.
How long does it take to get a registration?
This is difficult to predict as it depends on a number of factors, including how long the USPTO takes to process
the application, the basis for filing, and whether the application has any legal issues during its examination. It can
typically take from less than a year to several years.
Why would a registration be refused?
The United States Patent and Trademark Office will refuse to register a mark if it does not function as a trademark
or service mark. Not all words, names, symbols or devices function as trademarks. For example, matter which is
merely the generic name of the goods on which it is used cannot be registered. Additionally, Section 2 of the
Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for
refusing registration. The grounds for refusal under Section 2 may be summarized as:
1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions,
beliefs, or national symbols, or bring them into contempt or disrepute;
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or
of any State or municipality, or of any foreign nation;
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living
individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of
the United States during the life of his widow, if any, except by the written consent of the widow;
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use
of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of
applicant's goods or services;
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional. An attorney can help you determine whether your intended mark(s) will
meet the statutory requirements.
How long does a trademark registration last?
For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between
the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after
the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the
sixth or tenth year, with payment of an additional fee.
The registrant must also file a §9 renewal application within the year before the expiration date of a registration
currently 10 years), or within a grace period of six months after the expiration date, with payment of an additional
fee.
| Pricing and Application for a Trademark *the fee schedules are only estimates and are subject to change |
Comprehensive Trademark Search - $200.00
Determine if your name is available
• A comprehensive search including a search of:
1) Federal trademark databases
2) State trademark databases
3) Common law trademark databases of business names
4) Top Level Domain name databases including .com, .net, and .org
• A search report featuring:
1) The most relevant results organized by importance and categorized by database
2) A list of the search queries used to conduct the search
Comprehensive Trademark Search and Opinion Letter - $450.00
Determine if your trademark can be registered
• Comprehensive trademark search
• Search report
• Opinion letter written by an attorney that includes:
1) Summary of the search strategy and results including the most relevant trademark records
2) Analysis of search results in light of applicable law
3) Attorney's recommendation regarding the registrability and use of your proposed trademark
Trademark Application - $200.00
We will prepare and file your application with the United States Patent and Trademark Office.
• Determine appropriate listing of goods or services
• Recommend proper filing basis
• Review and include specimen demonstrating use of the trademark
• Become the attorney of record for your trademark application
Please note that the USPTO charges a fee of $325 per class of goods or services in the application. The USPTO
fee is not included in our fee.
Complete Trademarks Package - $600.00
Everything you need to file your Application for Registration of your trademark at a discounted price
• Comprehensive trademark search
• Search report
• Opinion letter
• Trademark application
Determine if your name is available
• A comprehensive search including a search of:
1) Federal trademark databases
2) State trademark databases
3) Common law trademark databases of business names
4) Top Level Domain name databases including .com, .net, and .org
• A search report featuring:
1) The most relevant results organized by importance and categorized by database
2) A list of the search queries used to conduct the search
Comprehensive Trademark Search and Opinion Letter - $450.00
Determine if your trademark can be registered
• Comprehensive trademark search
• Search report
• Opinion letter written by an attorney that includes:
1) Summary of the search strategy and results including the most relevant trademark records
2) Analysis of search results in light of applicable law
3) Attorney's recommendation regarding the registrability and use of your proposed trademark
Trademark Application - $200.00
We will prepare and file your application with the United States Patent and Trademark Office.
• Determine appropriate listing of goods or services
• Recommend proper filing basis
• Review and include specimen demonstrating use of the trademark
• Become the attorney of record for your trademark application
Please note that the USPTO charges a fee of $325 per class of goods or services in the application. The USPTO
fee is not included in our fee.
Complete Trademarks Package - $600.00
Everything you need to file your Application for Registration of your trademark at a discounted price
• Comprehensive trademark search
• Search report
• Opinion letter
• Trademark application
For additional pricing and other services such as renewal and other Trademark related filings, please contact
your Tolero representative today.
your Tolero representative today.
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